In February 2008, the Federal Court of Australia dismissed with costs a claim by the Polo/Lauren Company (Polo/Lauren) for damages, an account of profits and orders to restrain a retailer from importing and selling clothing bearing its polo player logo.

The court held that the retailer was entitled to rely on two defences:

• that the embroidered logo is a “label”, and that therefore the defence under section 44C of the Act (importation of non-infringing accessories to articles) was available; and

• that the embroidered logo falls within the definition of "corresponding design" in section 74 of the Act and that therefore the design/copyright overlap defence in section 77 applied to Polo/Lauren’s claim that, had it embroidered the logos itself, the retailer knew it would have infringed copyright.

The Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd [2008] FCA 49 (5 February 2008)

On 18 December 2008, the Full Court dismissed Polo/Lauren's appeal of the Federal Court decision.

The Court was satisfied that the logo affixed to the genuine Polo Ralph Lauren garments was a “label” within the definition of “accessory” in

section 10(1) of the Copyright Act and that the defence in section 44C was available.

It was strictly unnecessary to consider the interaction between copyright protection and design protection in this decision. However, the Court

expressed its view of the extensive submissions on this point and concluded that “neither party could win both the label argument and the corresponding design argument because the garments could not logically, at the one time, both ‘embody’ the Logo and be conceptually distinct from it.”

Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd [2008] FCAFC 195 (18 December 2008)